- Publications: A little over 60,000 patents issued May-September 2008. Of those, 90% were also published as applications under 35 U.S.C. §122(b). (This excludes the 1.5% filed prior to December 2000). How has this shift changed the business of patents?
- Needed: Senior ANDA Litigator.
- Bilski Coming?: IPO has planned a December 1 session to discuss “Patentable Subject Matter after In re Bilski” (via Hal Wegner).
Dennis — just curious, were there any striking differences in publication rates across the art units?
The A publication (or WO) is supposed to put you “on notice” but on notice of what? Your searcher (above) doesn’t know. Unless the PTO takes a strict line on prosecution amendments (like the EPO) then it’s anybody’s GUESS what claims will issue. There’s a good reason why the EPO is so strict on prosecution amendments: it’s to allow business to make sound business FTO decisions. It also has a marvellous effect in minimising the number of continuing applications, and hence a positive effect on pendency. But, best of all, it forces patent attorneys into thoughtful and competent claim drafting habits, so they do actually earn their high hourly rates.All this, and no downside either. Amazing.
Re: Published Applications and “How has this shift changed the business of patents?”
The generally ridiculous claims put forth in the unexamined and published at 18 month applications has made clearance and infringement work a disaster. For art with long pendency (all computer art for instance), searchers can legitimately report thousands of references to a requesting party as having claims which potentially could be infringed. Finding the amended claims on PAIR (when it’s up) is very time consuming and most end clients do not have the budgets for an attorney to review all of these documents anyway.
As searchers, we now get requests for only the “20 most relevant references” which forces us to provide unofficial opinions which is in no ones interest. Additionally, the easily reviewable claims from all database services, do not update during prosecution, only upon issuance.
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